T 0239/20 - (II) Review of findings of fact (IV)

Key points

• Board 3.2.01 reviews the OD's finding, that the alleged public prior use was proven, for errors in the reasoning. The Board seems to follow its earlier decision T1418/17. See also T 1604/16 of Board 3.2.02.
• The Board: "The reasoning of the Opposition Division in this respect is free of any error as regards the underlying facts and the evaluation of the evidence is also free of any contradiction."
• "Bearing in mind the principle of free evaluation of evidence [...] the Board concludes that there is no reason to overturn the evaluation of the evidence made by the Opposition Division in its decision in this respect."
• The Board hence seems to apply a deferential standard of review, as opposed to a de novo review. As a comment, this standard may possibly follow from the nature of appeal proceedings (i.e. to review 'in a judicial manner' the appealed decision including any findings of fact therein, Art. 12(2) RPBA). 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1206/19 - (No) review of decision to admit

Key points

•  The OD decided to admit a prior art document. The patentee requests to Board to reverse this decision. The Board finds that the OD correctly admitted the document into the proceedings.
• "Thus, the board cannot see any reason to "unadmit" a document which had already been admitted by the first-instance department without the latter having committed any substantial procedural violation in that regard (which would normally lead to a direct remittal of the case). "
• The Board then adds that: "At any rate, as held in T 39/93 (cf. Reasons 3.1.1, second paragraph), no valid judgment on the merits of the first-instance's decision could be made if evidence that was admitted by the first-instance department would simply be "unadmitted" by a board (contrary to the conclusions drawn e.g. in T 960/15, Reasons 3 []).  
• The Board in more detail refers to: "contrary to the conclusions drawn e.g. in T 960/15, Reasons 3, applying the test proposed in an obiter dictum of G 7/93, Reasons 2.6, relating to the exercise of discretion under Rule 86(3) EPC 1973 (Rule 137(3) EPC"
• As a comment, the Board's remark regarding T 960/15 appears (somewhat) obiter because the Board reviewed the OD's decision to admit the document and found it to be fine.
• As a further comment, to cite the CLBA V.A.3.4.1.b.: "Although G 7/93 was concerned with a specific situation, namely an examining division's refusal to admit amendments after issuing a communication under R. 51(6) EPC 1973, the boards have applied the criteria established there to their review of other discretionary decisions of the departments of first instance (T 820/14, see also T 858/17). For instance, the same approach has been taken to reviewing opposition division decisions on the admission of late-filed submissions (T 1209/05, T 1652/08, T 902/09, T 1253/09, T 544/12, T 1882/13).”

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

T 1370/15 - Ex officio objections in opposition appeal

 Key points

• The Board, in the headnote: “Not only in ex parte-, but also in inter partes appeal proceedings, a board is allowed to introduce new ex officio common general knowledge without evidence of such knowledge which prejudices maintenance of the patent, to the extent that the board is knowledgeable in the respective technical field from the experience of its members working on cases in this field.”
• There appear to be two aspects (1) the board can rely on common general knowledge without providing evidence (unlike e.g. USPTO PTAB and EPO examiners, I believe) and (ii) the board can introduce new common general knowledge (as well as new prior art documents, by the way) both in examination appeals and in opposition appeals.
• Perhaps to provide context: the patent was revoked by the OD and the opponent did not make any submissions in appeal.
• The Board finds that the “opposition division erred in finding that the subject-matter of claims 1 and 9 of the granted patent lacked novelty. Hence, “the appeal has revealed that it is allowable within the meaning of Article 111(1) EPC” (which does not mean that the patent is not revoked by the Board).
• Article 111(1) EPC: “Following the examination as to the allowability of the appeal, the Board of Appeal shall decide on the appeal. The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.”
• So one way of looking at Article 111(1) EPC is that the Board's examination of the allowability of the appeal means examining whether the appellant has shown that a bearing reason for the impugned decision is incorrect (here, that the claims are not novel, the OD's decision being to revoke the patent). In the next stage, if the appeal is ‘allowable’  in that sense, the Board ‘decides on the appeal’ and then “may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution”.
• The Board: “ to examine the subject-matter of the claims submitted for a decision on appeal. As opposition proceedings were initiated in mid-2013 and the appeal was filed in mid-2015, a remittal of the case would unreasonably delay its final settlement. Furthermore, the board is knowledgeable in the relevant technical field of user interfaces for broadcast applications from the experience of its members working on cases in this field.”
• I don't think the Board here wishes to suggest that in other appeal cases the Board is not knowledgeable in the relevant technical field, though in practice sometimes the first instance examiners may be more specialized in a narrow technical field.
• The Board, “Remitting a case because of new submissions would thus generally be contrary to what was intended with Article 11 of the revised RPBA of 2020.”
• The patentee objected to the Board's introduction of common general knowledge late in the oral proceedings. The Board assumes that these objections are legal arguments which are always admissible in line with T1914/12. The Board expresses that this is not certain: “While Article 114(2) EPC does indeed not mention the EPO's power to not admit ("disregard") legal reasoning (arguments), general principles of the law might prevent taking into account the legal reasoning under certain circumstances.”
• The Board's competence to raise new issues is not restricted by Article 12(2) RPBA 2020. “Given that these provisions are addressed to the parties and not to the boards, they have no immediate impact on the boards raising new issues under Article 114(1) EPC.”
• The Board may also raise new objections of own motion in opposition appeal. “While the Enlarged Board found in G 10/91 that the appeal procedure in inter partes cases was less investigative than the procedure of the opposition division, Article 114(1) EPC - which requires the EPO to examine the facts of its own motion - still applies. This means that a board is not excluded outright from introducing new facts and evidence in inter partes proceedings.”
• The Board is not required to present evidence of alleged common general knowledge citing T1090/12, point 6.2: “there is ... no general obligation on a board to provide documentary evidence for the existence of a piece of common general knowledge. In proceedings before the EPO, a board of appeal has to respect the right to be heard and to give reasons for its decision. In cases where a board refers to common general knowledge as state of the art, it is not obliged to provide documents in every conceivable case” (cited in the present decision in r.5.3.8 where there is a typo in the case number). 
• I've missed T1090/12 on this blog but Laurent Teyssèdre spotted it on his blog.

EPO T 1370/15

https://www.epo.org/law-practice/case-law-appeals/recent/t151370eu1.html

Reasons for the Decision

1. The appeal is admissible.

2. Interpretation of claim 1 of the granted patent

2.1 Claim 1 of the granted patent specifies that "the UI provider is configured whereby for a first transmission method a processing method from the plurality of processing methods is selectable and for a second transmission method a processing method from the plurality of processing methods is selectable independently from the selection of the processing method of the first transmission method".

2.2 Contrary to the opposition division (see point XVIII(a) above), the board agrees with the appellant (see point XIX(f) above) that the wording of granted claim 1 implies that a user interacts with a single user interface (UI) to set processing methods for transmission methods in which the selection of a first processing method does not put any constraints on the selection of further processing methods. This interpretation of claim 1 is based on Figures 2 and 4 and the corresponding parts of the description.

T 1388/17 - The Zone diet

 Key points

• By way of technical primer: en.wikipedia.org/wiki/Zone_diet : “The Zone diet is a fad diet emphasizing low-carbohydrate consumption. ... The Zone diet proposes that a relatively narrow distribution in the ratio of proteins to carbohydrates, centered at 0.75, is essential to "balance the insulin to glucagon ratio, which purportedly ... ultimately produces a cascade of biological events leading to a reduction in chronic disease risk, enhanced immunity, maximal physical and mental performance, increased longevity and permanent weight loss.””
• Claim 1 is directed to “A nutritional formulation or composition”. The closest prior art is D13/D19, namely the book "The Zone". The Board: “This book is on a diet for achieving several health benefits by maintaining the body's eicosanoids in balance, which is referred to as "the Zone".”
• The patentee is a major multinational.
• “The skilled reader would have learnt from these two studies that a Zone-favourable diet is suited to lower insulin resistance and it may be administered as a single nutritional formulation or composition (e.g. a candy bar). Such a nutritional formulation or composition replaces the diet. This is the disclosure regarded as the closest prior art.”
• No technical effect is credible for the distinguishing features. “he objective technical problem consists in providing an alternative composition for lowering insulin resistance.”
• The features are found obvious further in view of D15.
• As to the request for remittal: “The [patentee] requested that if the board found that the main request was inventive over document O1-D13/D19 in combination with O1-D17, and the board was going to also consider inventive step in light of document O1-D15, that the case be remitted to the department of first instance for further prosecution.”
• “The [patentee] clarified that its intention was to prevent the examination of a claim based on O1-D13/19 as the closest prior art in combination with O1-D15.”
• The Board: “It is true that in accordance with Article 12(2) RPBA 2020 the primary object of the appeal proceedings is to review the decision under appeal in a judicial manner.”
• The Board: “The board fails to see that the use of a different secondary document (O1-D15) instead of the one which the opposition division used in finding that the requests before them lacked inventive step (O1-D17) constitutes special reasons for remittal [in the sense of Article 11 RPBA 2020].”
• “This is all the more so because O1-D15 had been discussed during the opposition proceedings and the opposition division had also acknowledged this, both in the minutes and the decision. Moreover, the appellant had ample time to address this document and did so after receiving the board's  [preliminary opinion which drew attention to D15].”

EPO T 1388/17  - https://www.epo.org/law-practice/case-law-appeals/recent/t171388eu1.html

Reasons for the Decision

1. The patent in suit relates to a nutritional composition for improving glucose and insulin balance in an individual (paragraph [0001]). In particular, it concerns a composition or dietary regimen aimed at increasing insulin sensitivity and lowering insulin resistance (paragraph [0012]).

T 2154/15 - The risks of appealing a refusal

 Key points

• If you appeal a refusal decision, the Board is not restricted in any way in raising new objections. The introduction of the RPBA 2020 does not change this, despite the challenge of the applicant in this case.
• The  Board: “The purpose of the RPBA 2020 is to harmonise the procedure before the boards and increase their efficiency. In particular, Articles 12 and 13 RPBA 2020 give direction to the parties as regards the allowed scope of the appeal and amendments thereof. The board considers these Articles sufficiently clear in that they exclusively rule on the parties' procedural possibilities and not on the board's powers as defined by Article 111(1) EPC.”
• “However, Article 12(2) RPBA 2020 does not limit the board's powers of examination. ”
• Hence, the holding of G10/93 still holds good: “In ex parte proceedings, therefore, the boards of appeal are restricted neither to examination of the grounds for the contested decision nor to the facts and evidence on which the decision is based, and can include new grounds in the proceedings. This applies to both the patentability requirements which the examining division did not take into consideration in the examination proceedings and those which it indicated in a communication or in a decision to refuse the application as having been met.”

EPO T 2154/15 -  link

Reasons for the Decision

1. Admissibility of the appeal

The appeal was filed in due time and form and sufficiently substantiated. Thus, the appeal is admissible.

2. Request for referral - Article 112(1)(a) EPC

The request for referral of three questions to the Enlarged Board of Appeal is refused.

2.1 According to Article 112(1)(a) EPC, in order to ensure uniform application of law, or if a point of law of fundamental importance arises, the board of appeal shall refer any question to the Enlarged Board of Appeal if it considers that a decision is required for the above purposes. Thus, Article 112(1)(a) EPC provides the board with discretion to refer questions following a request from a party.

2.2 Article 111(1) EPC provides the Boards of Appeal with the discretion to either exercise any power within the competence of the department which was responsible for the decision appealed or to remit the case to that department for further prosecution. This provision defines the legal framework for the decision-making powers of the Boards. This legal framework - even as regards ex parte cases - was further interpreted by the Enlarged Board of Appeal (EBA) in G 10/93, point 3 of the reasons, as follows:

"In ex parte proceedings, therefore, the boards of appeal are restricted neither to examination of the grounds for the contested decision nor to the facts and evidence on which the decision is based, and can include new grounds in the proceedings. This applies to both the patentability requirements which the examining division did not take into consideration in the examination proceedings and those which it indicated in a communication or in a decision to refuse the application as having been met."

The EBA stated further (cf. G 10/93, point 4 of the reasons):

"Proceedings before the boards of appeal in ex parte cases are primarily concerned with examining the contested decision. If however there is reason to believe that a condition for patentability may not have been satisfied, the board either incorporates it into the appeal proceedings or ensures by way of referral to the examining division that it is included when examination is resumed."

The appellant argued essentially that because the Rules of Procedure of the Boards of Appeal as in force from 1 January 2020 (RPBA 2020) impose limitations on the parties, corresponding limitations should result for the Boards of Appeal.

The board does not agree with that argument. The purpose of the RPBA 2020 is to harmonise the procedure before the boards and increase their efficiency. In particular, Articles 12 and 13 RPBA 2020 give direction to the parties as regards the allowed scope of the appeal and amendments thereof. The board considers these Articles sufficiently clear in that they exclusively rule on the parties' procedural possibilities and not on the board's powers as defined by Article 111(1) EPC.

The appellant referred to the wording of Article 12(2) RPBA 2020 providing in particular that a judicial review is the "primary" object of the appeal proceedings. However, this formulation does not exclude that there are other important objects of the appeal proceedings, such as legal certainty for the public.

Article 12(2) RPBA 2020 continues to define that in view of this primary object, a party's appeal case shall be directed to the requests, facts, objections, arguments and evidence on which the decision under appeal was based. This defines the scope within which the party may file their appeal. However, Article 12(2) RPBA 2020 does not limit the board's powers of examination. The board further does not agree with the appellant in that the board's powers should be equally limited as the party's scope of appeal. No need for "equal" treatment of a party and the board is apparent, because the party and the board fulfil different roles in appeal proceedings.

2.3 Moreover, the Rules of Procedure of the Boards of Appeal constitute second degree subsidiary law and thus cannot remove powers attributed to the boards by an Article of the EPC. Article 111(1) EPC gives discretion to the boards. This discretion cannot be overruled by the RPBA, a point which is explicitly codified in the RPBA, see in particular Article 23 RPBA.

Further, Article 11 RPBA foresees that the board shall not remit a case unless special reasons present themselves for doing so. The board therefore does not agree to the appellant's suggestion in question 3 above that Article 11 RPBA can be interpreted as including an obligation for the board to remit the case at hand.

2.4 Consequently, the board concludes that the RPBA do not limit the powers of the boards as defined in Article 111 EPC.

As explained above, the Board is of the view that the questions raised by the appellant do not require a decision from the Enlarged Board of Appeal, since they can clearly be answered on the basis of the provisions of the EPC, the Rules of Procedure of the Boards of Appeal in force, and the case law of the Boards of Appeal. Hence, the board decided to refuse the request for referral to the Enlarged Board of Appeal.

T 1604/16 - Appellate review of findings of fact (II)

 Key points

• The present Board in five-member composition thoroughly rebuts T 1418/17 about what is the standard of review of factual findings at the Boards of appeal. 
• “The [other] board in T 1418/17 held that a board should only overrule a finding of fact made by the department of first instance if that department's evaluation of the evidence had one of the following shortcomings: essential points had not been considered, irrelevant matters had been taken into consideration or illogical conclusions had been drawn”
• “The Board in the case in hand deems it necessary to consider whether, when reviewing the Opposition Division's finding of fact, it should limit itself to identifying whether or not one of the criteria set out in T 1418/17 has been met”
• “With respect to the criteria set out in T 1418/17, the Board notes that the principle of the free evaluation of evidence applies to all types of evidence adduced, including documentary evidence, expert opinions and statements made by the parties. It is the Board's view that [the principle of the free evaluation of evidence ] has no direct bearing on the extent of the boards' competence for reviewing decisions in general , and particularly findings of fact made by a department of first instance.” [note: contrary to the reasoning in T 1418/17] 
• “If the criteria set out in T 1418/17 were applied so broadly, this would amount to a considerable restriction of a board's competence. This kind of restriction may well be found in some national jurisdictions where the last judicial instance only reviews questions of law and the review of findings of fact is very limited. If there are several instances of judicial review, legislators might limit the second or further instance's power of review. However, there is no basis in the EPC or established case law for such a broad restriction of the boards' competence.”
• “ On the contrary, the boards have competence to review appealed decisions in full, including points of law and fact (see e.g. explanatory remarks to new paragraph 2 of Article 12 of the Rules of Procedure of the Boards of Appeal, OJ Suppl. 2/2020). This is in accordance with Article 6 of the European Convention on Human Rights, which stipulates that there must be at least one judicial instance that can review a case in full, i.e. the law and the facts, given that the boards of appeal are the only judicial body to review decisions by the departments of first instance of the European Patent Office (regarding Article 6 ECHR, see e.g. Guide on Article 6 of the European Convention on Human Rights, Council of Europe/European Court of Human Rights 2013, paragraph 84).” (emphasis added).
• This reasoning makes sense to me. It may be added that a Board of appeal comprises two technical members, such that the technical expertise of the first instance department is not a ground for deference to its factual findings.
• “In view of the above the Board in this case does not see any reason why it should limit its review of the Opposition Division's findings of fact made in the context of the public prior use by applying the criteria set out in decision T 1418/17”
  
  
• Turning to the evidence at hand: “Under these circumstances, the evidence produced is not enough to convince the Board that the ramp depicted in the photographs in E1/1 was made available to the public before the filing date of the patent, in particular on the day Ms M's car was delivered according to E1. Hence, the Opposition Division erred in concluding that the ramp shown in E1/1 formed part of the prior art.”
  
  
• On the hearing of witnesses in general, in particular the need for a 'direct impression': 
  “When hearing a witness, the competent body (here the Opposition Division) has a number of ways of scrutinising the reliability of the witness testimony (a summary is given in T 474/04, reasons 8). Issues such as whether the testimony of the witness is based on their own observations or on information from others, or whether the witness was able to observe what they claim to have observed can be addressed in the form of questions answered by the witness. The questions and answers are then reflected in the minutes. There are also issues concerning the credibility of the witness themselves, that is whether the witness is telling the truth. This depends not only on what the witness says, but also on their body language, facial expressions etc. during the hearing. The direct impression that the witness may give is a matter which can only be assessed by the competent body hearing the witness.

EPO Headnote

The boards have competence to review appealed decisions in full, including points of law and fact. This applies also to findings of fact of the department of first instance which are based, at least in part, on the evaluation of witness evidence obtained in the course of hearing a witness (reasons, point 3.1 and sub-points).

EPO T 1604/16  -  link

Summary of Facts and Submissions

I. The patent proprietor has appealed against the Opposition Division's decision, posted on 1 March 2016, that, account being taken of the amendments according to auxiliary request 5 then on file, European patent No. 2 293 755 and the invention to which it related met the requirements of the EPC.

II. The patent was opposed on the grounds of lack of novelty, lack of inventive step, insufficient disclosure and added subject-matter.

By letter dated 13 August 2012 the opponent dropped the objection based on the ground of added subject-matter.

III. The Opposition Division held that the ground for opposition of insufficient disclosure did not prejudice the maintenance of the patent as granted.

The Opposition Division found that the subject-matter of claim 1 of the patent as granted lacked novelty over a public prior use based on the witness evidence of Ms M taken before the Opposition Division and the following documents:

E1: Invoice No. 2730463 from the company MobiTEC Sonderfahrzeugtechnik to Ms [M], dated 4 July 2007

E1/1: Photo documentation of a VW Caddy, delivered to Ms [M]

T 1418/17 - Appellate review of findings of fact (I)

Key points

• This is an opposition appeal issued by a five-member Board i.e. in extended composition.
• It raises the fundamental issue of what the standard of appellate review is for facts.
• I wrote the summary below well before 11.12.2020, i.e. before  T1604/16 was issued (also by a five-member board) which thoroughly rebuts the present decision T 1418/17. At the outset: I consider the present decision T 1418/17 to be wrong although I can see why its holding is attractive for Boards.
• The EPC does not explicitly contain rule on the standard of review for findings of facts.
• From the RPBA Notes: "The Boards of Appeal constitute the first and final judicial instance in the procedures before the European Patent Office. In this capacity, they review appealed decisions on points of law and fact." (Explanatory Note to Art. 12(2) RPB 2020; link; emphasis added). I note that this remark was added in the second draft, after the online user consultation, to make clear the Boards also review on points of fact, see e.g. epi's response to the consultation).
• The present Board, in the translated headnote: “a board of appeal should only annul the evaluation of the evidence of a first-instance department and replace it with its own if [the first instance department] recognizably (i) has failed to address material considerations,  or (ii) has considered factors that are irrelevant to the case, or (iii) reveals a violation of the laws of thought, such as logical errors and contradictions in the reasoning” or there is a mistake in the application of the law (e.g. an incorrect standard of proof has been applied).
• So, if the OD considers fact X to be proven, the Board's review on points of fact is limited to a review for whether OD's finding of fact is tainted by any of the three mentioned errors, according to this Board. 
• According to the Board, the above follows from the ‘principle of free evaluation of evidence’ under the EPC. I note that at least Dutch civil procedural law has the same principle of free evaluation of evidence and an unlimited appellate review of facts and evidence.
• As a note, the principle of free evaluation of evidence means that there are no strict rules, e.g. that the testimony of three witnesses is binding evidence, as was the case in medieval law (Roman-canonical law).  “The [medieval] formal theory of evidence that grew out of this hierarchical evaluation [of evidence] left no option for the judge: [the judge] was required to be convinced after the designated number of witnesses had testified concordantly” (link). “The principle of free evaluation of the evidence by the judge generally dates from the French Revolution. The French introduced the concept of the judge’s conviction intime (inner, deep-seated conviction) in contrast to rules of formal evidence that prescribed exactly when the evidence amounted to proof” (link to https://www.britannica.com/topic/evidence-law)
• The Board, in the present case: “Nichts von dem [the indicated three possible errors] ist vorliegend erkennbar. Die Kammer erachtet die Entscheidung der ersten Instanz hinsichtlich der Frage der Offenkundigkeit der vorgebrachten offenkundigen Vorbenutzungen vielmehr als rechts- und logikfehlerfrei, so dass die Beweiswürdigung der Einspruchsabteilung nicht zu beanstanden ist.”
• This concerns the factual finding that a machine UWS 500 had been demonstrated at a trade exhibition before the priority date. However, the Board is still free to evaluate whether that machine took away the novelty of the claim. 
• “Anders als von der Einspruchsabteilung eingeschätzt, ist die Kammer daher der Auffassung, dass der Gegenstand des Anspruchs 9 des Hauptantrags von der vorgebrachten offenkundigen Vorbenutzung durch Ausstellung und Vorführung der "UWS 500" Maschine auf Messen neuheitsschädlich getroffen ist ”
  
  
• T 1418/17 hn.2 was already cited and followed by another Board in T 1057/15, r.2.4 for fact-finding by the OD after a witness hearing.

EPO Headnote (translation)
1. With regard to the determination of the relevant facts by the opposition division, it should be borne in mind that the principle of free evaluation of evidence applies to the European Patent Office, which must also have an impact on the review in appeal proceedings.

2. To the extent that there is no mistake in the application of the law (e.g. an incorrect standard of proof has been applied), a board of appeal should only annul the evidence of a first-instance department and replace it with its own if [the first instance department] recognizably

(i) has failed to address material considerations,  or 

(ii) has considered factors that are irrelevant to the case, or

(iii) reveals a violation of the laws of thought, such as logical errors and contradictions in the reasoning.

EPO Headnote
1. Hinsichtlich der von der Einspruchsabteilung vorgenommenen Feststellung der relevanten Fakten ist zu berücksichtigen, dass vor dem Europäischen Patentamt anerkanntermaßen der Grundsatz der freien Beweiswürdigung gilt, was auch Auswirkungen auf die Überprüfung im Beschwerdeverfahren haben muss.

2. Soweit kein Rechtsanwendungsfehler vorliegt (etwa ein falscher Beweismaßstab angewandt wurde), sollte eine Beschwerdekammer daher die Beweiswürdigung eines erstinstanzlichen Spruchkörpers nur aufheben und durch ihre eigene ersetzen, wenn diese erkennbar
(i) wesentliche Gesichtspunkte nicht berücksichtigt hat, oder
(ii) sachfremde Erwägungen mit einbezogen hat oder
(iii) einen Verstoß gegen die Denkgesetze, etwa logische Fehler und Widersprüche in der Begründung, erkennen lässt.


EPO T 1418/17 - link




1.3 Hinsichtlich der von der Einspruchsabteilung vorgenommenen Feststellung der relevanten Fakten ist zu berücksichtigen, dass vor dem Europäischen Patentamt anerkanntermaßen der Grundsatz der freien Beweiswürdigung gilt, vgl. G 3/97, Gründe Nr. 5, G 1/12 Gründe Nr. 31, was auch Auswirkungen auf die Überprüfung im Beschwerdeverfahren haben muss, vgl. T 1107/12, Gründe Nr. 1.2.2, T 621/14, Gründe Nr. 2.1. Soweit kein Rechtsanwendungsfehler vorliegt (etwa ein falscher Beweismaßstab angewandt wurde), sollte eine Beschwerdekammer daher die Beweiswürdigung eines erstinstanzlichen Spruchkörpers nur aufheben und durch ihre eigene ersetzen, wenn diese erkennbar

(i) wesentliche Gesichtspunkte nicht berücksichtigt hat (T 1553/07, Gründe Nr. 20), oder

(ii) sachfremde Erwägungen mit einbezogen hat (vgl. T 2565/11 Gründe Nr. 1.2.1, 1. Fall) oder

(iii) einen Verstoß gegen die Denkgesetze, etwa logische Fehler und Widersprüche in der Begründung, erkennen lässt (vgl. T 2565/11 Gründe Nr. 1.2.1, 2. Fall).

T 0617/16 - Non-reviewable decision?

Key points

• In this opposition appeal, the OD had admitted D13 into the proceedings despite the proprietor requesting to hold D13 inadmissible.
• The patentee argues in appeal that the reasoning of the OD concerning D13 was incorrect and the decision to admit D13 should be reverted.
• The Board: “the board notes that the EPC does not provide a legal basis for excluding, in appeal proceedings, submissions (such as prior-art documents) which were admitted into the first-instance proceedings, in particular when the impugned decision is based on them [...]. In view of the very aim of the appeal proceedings to review the decision under appeal in a judicial manner according to Article 12(2) RPBA 2020, such submissions are automatically part of the appeal proceedings” (internal citations omitted).
• The Board cites T 1549/07, r.2.1; T 1852/11, r.1.3; T 1201/14, r.2 and T 487/16, r.3; and T 2603/18, r.1 for this argument. Yet, the Board's reasoning does not persuade me. 
• In my view, the legal basis for reviewing the OD's decision to admit D13 is Article 110, first sentence: “If the appeal is admissible, the Board of Appeal shall examine whether the appeal is allowable.”. 
• The (discretionary) decision of the OD to admit D13 is part of the impugned decision and hence part of the appeal under Article 12(2) RPBA 2020. G 7/93, r.2.6 explained that “a Board of Appeal should only overrule the way in which a first instance department has exercised its discretion if it comes to the conclusion either that the first instance department in its decision has not exercised its discretion in accordance with the right principles [...], or that it has exercised its discretion in an unreasonable way, and has thus exceeded the proper limits of its discretion.” The Enlarged Board sets a highly deferential standard of review here, but in my view Enlarged Board at the same time prescribes that the BoA should (in fact, must) overrule the first instance department if that department made such an error. 
• Since the decision of the OD on admissibility is part of the appealed decision, “the very aim of the appeal proceedings to review the decision under appeal in a judicial manner” in my view includes a review of that procedural decision.

EPO T 0617/16 - link


1.1 Claim 1 - Novelty and inventive step in view of D13

1.1.1 Admissibility of document D13

Appellant I [patentee] argued that the reasoning for rejecting the request not to admit document D13 into the opposition proceedings was incorrect and should be reverted, since features F2 and F3 could not be considered to be disclosed in D13.

In that regard, the board notes that the EPC does not provide a legal basis for excluding, in appeal proceedings, submissions (such as prior-art documents) which were admitted into the first-instance proceedings, in particular when the impugned decision is based on them (see e.g. T 1549/07, Reasons 2.1; T 1852/11, Reasons 1.3; T 1201/14, Reasons 2).
In view of the very aim of the appeal proceedings to review the decision under appeal in a judicial manner according to Article 12(2) RPBA 2020, such submissions are automatically part of the appeal proceedings (see T 487/16, Reasons 3; T 2603/18, Reasons 1).
Accordingly, the board sees no reason to revert the opposition division's decision to admit D13 into the opposition proceedings. Appellant I did not further comment on that issue during the oral proceedings before the board.

T 0605/17 - Losing attacks upon appealing

Key points

• In this opposition appeal, the opponent appeals and does not maintain all attacks that it had presented before the OD with the Statement of grounds. Later in the appeal procedure, it again takes up these attacks.  “Sie [the opponent] argumentierte, dass diese Einwände zugelassen werden sollten, weil sie nur auf bereits aus dem Einspruchsverfahren bekannte Einwände zurückgreifen wolle.”

• The Board does not admit them.
• “Nachdem das Beschwerdeverfahren ein vom Einspruchsverfahren getrenntes Überprüfungsverfahren ist, hätten diese Einwände gemäß Artikel 12 (2) VOBK 2020 spätestens mit der Beschwerdeerwiderung erhoben werden müssen. Weil sie auch nicht durch eine neue Verfahrenssituation veranlasst sind, handelt es sich um verspätet vorgebrachte Einwände, die eine Änderung des Vorbringens der Beschwerdeführerin 2 im Sinne von Artikel 13 VOBK 2020 darstellen.”

EPO T 0605/17 -  link





2. Verspätet vorgebrachte Einwände

2.1 Während der mündlichen Verhandlung erklärte die Beschwerdeführerin 2, sie wolle weitere Einwände in Bezug auf die Neuheit (ausgehend von Dokumenten D2 und D3) und erfinderische Tätigkeit gegen den Hauptantrag erheben. Sie argumentierte, dass diese Einwände zugelassen werden sollten, weil sie nur auf bereits aus dem Einspruchsverfahren bekannte Einwände zurückgreifen wolle. Zudem verwies sie auf ihr Schreiben vom 7. Januar 2020, in dem sie sich das Recht vorbehalten hatte, weitere Neuheitsangriffe aus dem Einspruchsverfahren vorzubringen (siehe Seite 3, 2.1).

2.2 Neuheitseinwände gegenüber dem Hauptantrag ausgehend von D2 oder D3 sowie Einwände in Bezug auf erfinderische Tätigkeit waren bislang nicht Gegenstand des Vorbringens der Beschwerdeführerin 2. Sie hatte als Beschwerdegegnerin im gesamten schriftlichen Verfahren in Bezug auf den Hauptantrag lediglich zur Neuheit gegenüber D6 vorgetragen, aber keinerlei weitere Einwände geltend gemacht. Auch im Schreiben vom 7. Januar 2020 wurden keine konkreten Einwände erhoben - ein allgemeiner Hinweis, dass sie sich das Recht vorbehalte weitere Einwände geltend zu machen, kann nicht als ein substantiierter Einwand betrachtet werden. Folglich gelten diese Einwände als erst während der mündlichen Verhandlung erhoben.

2.3 Nachdem das Beschwerdeverfahren ein vom Einspruchsverfahren getrenntes Überprüfungsverfahren ist, hätten diese Einwände gemäß Artikel 12 (2) VOBK 2020 spätestens mit der Beschwerdeerwiderung erhoben werden müssen. Weil sie auch nicht durch eine neue Verfahrenssituation veranlasst sind, handelt es sich um verspätet vorgebrachte Einwände, die eine Änderung des Vorbringens der Beschwerdeführerin 2 im Sinne von Artikel 13 VOBK 2020 darstellen.

2.4 Da diese Änderung erst nach Zustellung der Ladung zur mündlichen Verhandlung, die noch vor dem Inkrafttreten der VOBK 2020 erging, vorgebracht wurde, unterliegt die Zulassung der verspätet vorgebrachten Einwände gemäß Artikel 25 (3) VOBK 2020 den Bestimmungen des Artikels 13 (3) VOBK 2007. Dieser sieht vor, dass Änderungen des Vorbringens nur dann zugelassen werden sollen, wenn sie keine Fragen aufwerfen, deren Behandlung der Kammer oder der anderen Verfahrensbeteiligten ohne Verlegung der mündlichen Verhandlung zuzumuten sind.

2.5 Weil die Beschwerdeführerin 2 diese Einwände erst in der mündlichen Verhandlung erhoben hat, blieben die Beschwerdeführerin 1 und die Kammer trotz des oben erwähnten Schreibens der Beschwerdeführerin 2 bis zum Tag der mündlichen Verhandlung im Ungewissen, ob und welche Einwände erhoben werden würden und aufgrund welcher Tatsachen und Beweismittel dies geschehen könnte. Ihre Behandlung in diesem extrem späten Verfahrensstadium war der Kammer und der Beschwerdeführerin 1 ohne Vertagung der mündlichen Verhandlung daher nicht zuzumuten.

2.6 Die Kammer hat daher entschieden, die verspäteten Einwände nicht ins Verfahren zuzulassen.

Entscheidungsformel

Aus diesen Gründen wird entschieden:

1. Die angefochtene Entscheidung wird aufgehoben.

2. Das Patent wird aufrechterhalten wie erteilt.